The Korean Supreme Court
rendered two decisions regarding Product-By-Process claims this year.
In the first Supreme
Court decision that was rendered on January 22, 2015 (Supreme Court case No. 2011
Hu 927, en banc), the Supreme Court held that the patentability of product by process
claims must be based on the product itself without considering the process
recited in the claim. By the en banc decision, the standard of patentability of
product by process claim was changed from the old practice that allowed some
exceptions. The new standard does not allow any exception to product by process
claims. Therefore, new process limitations can NOT save patents claiming known
or obvious products.
Furthermore, in the
second decision that the Supreme Court rendered on February 12, 2015, (Supreme
Court case No. 2013 Hu 1726), the Court held that the same principles set forth
in the first Supreme Court case No. 2011 Hu 927 shall be applied for constructing
product by process claims; determining the claim scope of product-by-process
claims and judging infringement of product-by-process claims. The process in
claims shall not be any limitation and thus the product made by any different
process may infringe the product by process claim.
However, the Supreme
Court allowed an exception: in case the scope of claimed invention is clearly,
overly broad and unreasonable (e.g., unduly exceeds the scope supported by the
specification disclosure as a whole), the claim wordings of the process may be used
as limitations to the scope of the product by process claim.
In summary, (1) the
product itself in claims shall be a basis for the scope of claimed invention
without considering the process limitations; but (2) the claim wordings of
process may limiting the scope of claims in case the constructed scope of
product by process claims is clearly and unreasonably broad considering the
specification.
The old law is that always,
without exception, every wording of clams shall be regarded as limitations of
claimed inventions and thus the process recited in product by process claim
must be considered to determine the scope of claims for infringement judgment. Under
the old law, the same product made by any different process does not infringe
the product by process claim. The recent Supreme Court decision changing the
old law will benefit patent owners.
